UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`
`Petitioner
`
`v.
`
`GREE, INC.,
`
`Patent Owner
`
`Case PGR2018-00037
`U.S. Patent No. 9,662,573
`
`DECLARATION OF DAVID CRANE
`
`GREE, Inc. Exhibit 2001 Page 1
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`
`Petitioner
`
`v.
`
`GREE, INC.,
`
`Patent Owner
`
`Case PGR2018-00037
`U.S. Patent No. 9,662,573
`
`DECLARATION OF DAVID CRANE
`
`GREE, Inc. Exhibit 2001 Page 1
`
`
`
`INTRODUCTION
`
`1.
`
`I have been retained by counsel for GREE, Inc. (“Patent Owner”) as a
`
`technical expert in connection with the proceeding identified above. I submit this
`
`declaration in support of the Patent Owner’s Preliminary Response to the Petition
`
`for Post-Grant Review of U.S. Patent Number 9,662,573. I have been retained to
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`provide a technical opinion concerning the ’573 Patent with respect to the challenges
`
`of the Petition.
`
`2.
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`I am being compensated at a rate of $450/hour by Patent Owner for my
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`assistance in connection with the above-captioned Post-Grant Review proceeding,
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`and all activities in connection with the preparation of this declaration. I have no
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`personal stake nor interest in the outcome of the present proceeding.
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`3.
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`In forming my opinions stated in this declaration, I reviewed and am
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`familiar with U.S. Patent Number 9,662,573 B2 (hereinafter “the ‘573 Patent”). I
`
`understand that Supercell Oy (“Supercell” or “Petitioner”) has requested Post-Grant
`
`Review of the ‘573 Patent in a Petition dated February 27, 2018. I have also
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`reviewed, and am familiar with the Petition.
`
`4.
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`Information about my education, experience, publications, and awards
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`are provided in my CV filed as Exhibit 2002 in the subject PGR proceeding.
`
`GREE, Inc. Exhibit 2001 Page 2
`
`
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`DEFINITIONS AND STANDARDS
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`5.
`
`I have been informed and understand that claims are construed from the
`
`perspective of a person of ordinary skill in the art (“POSITA”) at the time of the
`
`claimed invention, and that during post-grant review, claims are to be given their
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`“broadest reasonable construction in light of the specification.” I understand that the
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`“broadest reasonable construction,” often referred to as the “broadest reasonable
`
`interpretation” (BRI), of a claim term “must be consistent with the ordinary and
`
`customary meaning of the term (unless the term has been given a special definition
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`in the specification), and must be consistent with the use of the claim term in the
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`specification and drawings. Further, the broadest reasonable interpretation of the
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`claims must be consistent with the interpretation that those skilled in the art would
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`reach.” (MPEP § 2111.)
`
`6.
`
`I have been informed and understand that an invention is patent-eligible
`
`if it claims a new and useful process, machine, manufacture, or composition of
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`matter, but laws of nature, natural phenomena, and abstract ideas are not patentable.
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`I have been informed and understand that the inquiry determinative of whether or
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`not an invention is patent-eligible has two steps: (1) determine whether the claim is
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`directed to a patent-ineligible abstract idea, and (2) if so, whether the elements of the
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`claim both individually and as an ordered combination transform the nature of the
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`claim in a patent-eligible application of the abstract idea. I have been informed and
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`
`
`
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`GREE, Inc. Exhibit 2001 Page 3
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`
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`understand that claims reciting well-understood, routine, conventional activity in the
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`field are insufficient to render the claims patent-eligible, and the question of whether
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`a claim element or combination of elements is well-understood, routine and
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`conventional to a skilled artisan in the relevant field is a question of fact.
`
`7.
`
`I have also been informed that to satisfy the written description
`
`requirement, a patent specification must describe the claimed invention in sufficient
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`detail that one skilled in the art can reasonably conclude that the inventor had
`
`possession of the claimed invention. I have been informed and understand that this
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`test requires an objective inquiry into the four corners of the specification from the
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`perspective of a person of ordinary skill in the art, and based on that inquiry the
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`specification must describe an invention understandable to that skilled artisan and
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`show that the inventor actually invented the invention claimed.
`
`8.
`
`I have been informed and understand that a claim must particularly
`
`point out and distinctly claim the subject matter. I have been informed and
`
`understand that a claim is indefinite when it contains words or phrases whose
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`meaning is unclear. I have been informed and understand that the definiteness
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`requirement is not a demand for unreasonable precision, and the amount of clarity
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`that is required necessarily invokes some standard of reasonable precision in the use
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`of language in the context of the circumstances. I have been informed and understand
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`that whether claims are sufficiently definite is based on the perspective of one of
`
`
`
`
`
`GREE, Inc. Exhibit 2001 Page 4
`
`
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`ordinary skill in the art in view of the entire written description and prosecution
`
`history.
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`LEVEL OF ORDINARY SKILL IN THE ART
`
`9.
`
`I understand that U.S. patent law interprets patents from the point of
`
`view of a POSITA.
`
`10.
`
`I have been informed by counsel and I understand that the POSITA is
`
`a hypothetical person who is presumed to be familiar with the relevant scientific
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`field and its literature at the time of the invention. This hypothetical person is also a
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`person of ordinary creativity capable of understanding the scientific principles
`
`applicable to the pertinent field.
`
`11.
`
`In my opinion, a POSITA, with regard to the ‘573 Patent, would possess
`
`at least an associate degree in the field of computer science (or a related academic
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`field) and at least two additional years of practical (e.g., work) experience in the field
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`of video game technology. If the POSITA did not obtain a formal degree, then a
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`POSITA would have at least four years of practical (e.g., work) experience in the
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`field of video game technology, or an equivalent field of study. In addition, a
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`POSITA would have training or familiarity with social games that allow several
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`players to participate in the same game, and that use a community-forming network
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`service called a social networking service.
`
`
`
`
`
`GREE, Inc. Exhibit 2001 Page 5
`
`
`
`12. Based on my educational background and work experience, I am and
`
`was familiar with the technology at issue as of the time the application leading to the
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`‘573 Patent was filed. My educational background and experience also allow me to
`
`evaluate what knowledge a POSITA, as defined above, would have because I have
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`worked with, and have had technical discussions with many people with similar
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`qualifications.
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`13.
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`I believe I am familiar with what such a POSITA, as defined above,
`
`would understand from reading the ’573 Patent, or other evidence included in the
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`record of this post-grant review. In this declaration, when discussing what a
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`document discloses or suggests, I am describing what I believe a POSITA would
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`have understood as being disclosed or suggested by the document at the time of the
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`invention.
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`OPINIONS
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`14. As an initial matter, it is desirable in the art for a social game to be
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`configured to expand its audience by encouraging current players to invite new
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`players to join. One method of encouragement is to offer a reward as an incentive to
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`a current player if a player he or she invites to the game ultimately signs up and
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`participates in the game. On the other hand, it is also known that the number of
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`invited players who register and participate in a game, commonly known as the
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`"conversion rate," is very low. In a field where it is reasonable and customary for a
`
`
`
`
`
`GREE, Inc. Exhibit 2001 Page 6
`
`
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`player to receive an incentive in return for new player registration, the '573 Patent
`
`discloses an alternative method for increasing the frequency of receiving an award,
`
`thus incentivizing players to send invitations.
`
`15.
`
`In said social game referral programs known in the art, it is widely
`
`prevalent for referring players to be rewarded only for "successful referrals." A
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`successful referral is one in which the new player becomes an active and/or paying
`
`player of the game. Rewards for successful referrals in common use in the art
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`include:
`
`16.
`
`In the game World of Warcraft’s “Recruit a Friend” program, a player
`
`making a referral is rewarded when the referred player purchases the game and
`
`subscribes for at least a month.
`
`"If your friend purchases a full copy of World of Warcraft and
`pays for a month of subscription time, you'll get 30 days of game
`time FREE!
`
`if your friend pays for two full months of game time, you'll receive
`a choice of EPIC in-game mounts or special pets."1
`
`17.
`
`In the game League of Legends’ “Refer-a-Friend” Program, a
`
`successful referral is a new player who reaches at least level 10 of the game.
`
`"... for every friend you refer who reaches level 10, you’ll earn
`1000 IP. You can refer a total of five friends, and with three
`
`
`1 http://us.battle.net/wow/en/game/recruit-a-friend/
`
`
`
`
`
`GREE, Inc. Exhibit 2001 Page 7
`
`
`
`successful referrals, you’ll unlock the Grey Warwick skin.
`Recruit five friends and you’ll unlock Medieval Twitch."2
`
`18.
`
`In the game Destiny’s “Refer-a-Friend” program, a successful referral
`
`is a new player who cooperates with the referring player in-game in order to
`
`complete a certain quest.
`
`"Complete A Tale of Two Guardians to earn the following
`rewards: Elemental Infinite Edge, EV-34 Vector Infinite, Duo
`Dance, High Five, Infinite Link and Sign of the Infinite."3
`
`19. Petitioner argues that the “incentives” of the claims appear to lack the
`
`ability to motivate or encourage the player to send the invitations to other players,
`
`alleging the specification does not describe providing the player with information
`
`that they will receive an incentive for access and registration that results from the
`
`invitation. I disagree with Petitioner's contention that "There can be no motivation
`
`or incentivizing without knowledge of the incentive process" (See Pet. at 35). Nor
`
`do I agree with Petitioner's claim that "Because the player is not informed of any
`
`potential incentive before it is given, there is no enhanced motivation to invite other
`
`players". (Id.) In fact, a behavior can be incentivized either through promise or
`
`reward.
`
`
`2 https://na.leagueoflegends.com/en/news/game-updates/features/upcoming-
`changes-refer-friend
`3 https://www.primagames.com/games/destiny/tips/destiny-taken-king-how-refer-
`friend
`
`
`
`
`
`GREE, Inc. Exhibit 2001 Page 8
`
`
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`20. A POSITA familiar with social games and social networking services
`
`would understand that while the benefit of incentive-based referral systems to the
`
`social community comes from an increased user base, the benefit to the referring
`
`player can be a function of the quality and frequency of incentive rewards provided
`
`in return for a referral. The existence of rewards for referrals will incentivize a player
`
`to participate in a social game’s referral program, but it is the frequency of rewards
`
`that provides the incentive for a player to continue to, and repeatedly participate in
`
`said referral program.
`
`21. The '573 Patent discloses an alternative method for increasing the
`
`frequency of receiving an award for the same effort of making a referral. A POSITA
`
`would understand how this increased reward-to-effort ratio provided by the
`
`invention would lead to the stated goal to "enhance motivation of a player to invite
`
`another player to a social game". (See '573 Patent at 3:44-46).
`
`22.
`
`In social game referral programs known in the art, it is widely prevalent
`
`for incentives to be limited for each referring player. As a result, once a player
`
`reaches his referring limit (such as League of Legends’ “total of five friends” [ref
`
`above]), he or she can no longer earn incentives through referrals.
`
`23. The '573 Patent discloses a method for providing continued incentive
`
`for a player to make referrals, first by defining separate and distinct incentive limits
`
`for each of the first, second, and third incentive events; and second by dynamically
`
`
`
`
`
`GREE, Inc. Exhibit 2001 Page 9
`
`
`
`changing the incentive limits over predetermined time periods. “The number of
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`times of the first to the third incentives may be limited within predetermined
`
`duration, and the limitation number of times of the incentives can be changed for
`
`every predetermined duration. […] In this way, the number of times of the incentives
`
`that can be given is limited within predetermined duration, and the limitation number
`
`of times thereof is changed for every predetermined duration whereby a
`
`predetermined event can be tied to the predetermined duration, […] Players may be
`
`informed of the number of times of incentives given or their contents by a
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`predetermined method, whereby the players can be encouraged to transmit invitation
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`messages.” (See ‘573 specification at 13:63-14:13)
`
`24. By applying dynamically-changing separate incentive limits to the
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`three incentive-earning events over a predetermined duration, a player is given to
`
`understand that additional invitations may be rewarded. This process as described
`
`by the ‘573 specification can “lead to an increase in the number of invitation
`
`messages to be transmitted.” (See ‘573 specification at 14:8-14:8).
`
`25.
`
`I carefully considered all of the arguments and support in the Petition
`
`for Post-Grant Review of U.S. Patent 9,662,573 alleging that claims 1-11 lack
`
`written description support, and I disagree with such a conclusion for the reasons
`
`stated herein.
`
`
`
`
`
`GREE, Inc. Exhibit 2001 Page 10
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`
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`26.
`
`I disagree with the Petitioner’s allegation that the ‘573 Patent fails to
`
`provide adequate written description of enabling a first terminal device to send
`
`invitation information to a second terminal device. As shown in FIG. 5, invitations
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`R11 and R21 sent to the second terminal devices originate from HOME SCREEN
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`(APPLICATION) V3 of management range T1. As described in the specification,
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`"[f]irstly player A1 operates the terminal device 2 to use the external service S1
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`through the home screen V3 of the aforementioned game, thus transmitting an
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`invitation message to the terminal devices 2 operated by his/her friends (players C1
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`and D1) (R11, R21)." (See '573 Patent at 10:41-45). One of ordinary skill in the art
`
`would understand that the home screen element V3 serves to enable the sending of
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`said invitation through the operation of the first terminal device.
`
`27.
`
`I disagree with the Petitioner’s allegation that the ‘573 Patent fails to
`
`provide adequate written description of detecting when the second terminal device
`
`is operated to access the landing screen. The ‘573 Patent discloses that the server
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`device 100 performs processing functions including those operations included in the
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`"management range T1" shown in FIG. 5. "The management range T1 refers to the
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`range of information and processing that the provider can manage in the platform..."
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`(See '573 Patent at 9:60-62). The detection of second terminal access occurs within
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`said "management range." It is disclosed that the invitation to the second terminal
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`device contains both URL information and tracking code information: "The
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`
`
`
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`GREE, Inc. Exhibit 2001 Page 11
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`
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`invitation message contains URL (specific information) to specify a landing screen
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`(page) V1 and descriptions to suggest participating in the game (solicitation
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`information). The URL to specify V1 contains tracking code (identification
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`information). The tracking code is provided to discriminate player A1 who operates
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`the terminal device 2 as the origination of the URL from other players..." (See Patent
`
`'573 at 9:29-36).
`
`28. One of ordinary skill in the art would understand that the act of clicking
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`(See FIG. 7 step ST503) on a URL link to V1 necessarily results in the detection of
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`access, generating a response. Further, the existence of tracking code information
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`contained in the URL to V1 serves not only to detect access by the second terminal
`
`but to also discriminate the identity of the terminal doing the accessing. The
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`specification goes on to provide additional details on another way in which the server
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`is involved in said detection function, comparing the tracking code received to codes
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`held within the server: “When a terminal device 2 receiving the invitation message
`
`accesses the landing screen VI based on the URL, the server device 100 can obtain
`
`the tracking code. This allows the server device 100 to discriminate player A1 from
`
`other players based on the tracking code held at the application of the game and
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`tracking codes acquired based on the URL.” (See ‘573 Patent at 9:43-49). Thus, the
`
`specification is clear on how the server device detects access by the second terminal
`
`device.
`
`
`
`
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`GREE, Inc. Exhibit 2001 Page 12
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`
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`29.
`
`I disagree with the Petitioner’s allegation that the ‘573 Patent fails to
`
`provide adequate written description of giving incentives. In social gaming, players
`
`typically accumulate "virtual goods" - assets which have no real-world existence,
`
`but are useful in some way within the game context. One of ordinary skill in the art
`
`would understand that "giving an incentive" to a player would meanadding an item
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`to that player's inventory of virtual goods.
`
`30.
`
`I declare that all statements made herein of my own knowledgeare true
`
`and that all statements made on information and belief are believed to be true and
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`correct.
`
`Executed on: Tune. a 20)
`
`
`
`David Crane
`
`GREE, Inc.
`
`Exhibit 2001
`
`Page 13
`
`
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